On the Designers Guild case, the importance of the ‘independent creation’ defence, and the proper placement and function of the idea/expression dichotomy in UK copyright

When does copyright law permit an artist to be inspired by a predecessor? And to what extent can that at artist be allowed to study and copy elements of his predecessor’s work? Can he copy certain techniques or motifs, structural composition and lighting or relief effects?

These were the questions before the House of Lord in the landmark case of Designers Guild v Williams,[1] the go to legal authority on the function of copyright’s ‘inference of copying’, ‘idea/expression dichotomy’ and ‘substantial part’ tests in the United Kingdom. Unfortunately, the judgement is unclear without a close and rigours reading. Many of the finer points are given little elaboration by the Law Lord and, on other points, the judgements are contradictory. This short piece attempts to breathe a sense of cohesion into the logic of the judgement.

At the outset, it is necessary to explain the relevance of having a clear understanding of the Designers Guild decision. According to section 16(3) of the Copyright, Designs and Patents Act 1988,[2] copyright is infringed when a person copies the whole or a substantial part of the copyright protected work. In practice, this test is broken down into the following steps:

It is part of the claimant’s case to prove that copying has taken place. This can be achieved in one of two ways; either

the defendant makes an omission that he copied the claimant’s work; or

the court can infer copying based on the facts of the case;

Where there is no omission from the defendant of copying, it is for the claimant to prove

that there are sufficient similarities between the two work; and

that the defendant had access to the claimant’s work;

If the claimant can meet this evidentiary threshold, the evidential burden of proof shifts to the defendant. At this stage, the defendant has the opportunity to make out a defence that, despite the similarities and the two works and the defendant having access to the claimant’s work, the defendant’s work is a result of his own ‘independent creation’.

If the court is not persuaded by the defendant’s plea of ‘independent creation’, the court is permitted to make an inference that the defendant copied the claimant’s work;

Once it has been established that the defendant copied the claimant’s work, the court is to consider whether the element that the defendant copied constituted a substantial part of the claimant’s work. This is a qualitative and quantitative test. It is, however, unnecessary at this stage to consider the defendant’s work. It, therefore, does not matter if the element taken forms only a minor part of the defendant’s work; the question is one of what qualitative and/or quantitative value the copied had within the claimant’s work.

If it is found that the copied element was a substantial part of the claimant’s work, the defendant will be found to have infringed the claimant’s copyright. The only recourse for the defendant, at this stage, is to rely on one of the permitted acts (or exceptions) to copyright infringement outlined in Part I Chapter III of the Copyright, Designs and Patents Act. In most cases, the defendant’s reliance on these exceptions are judged objectively and, as a result, the defendant’s subjective opinions are discounted.

Having broken down this test into its relevant stages, one crucial observation can be made. The only means that a defendant has not be found to have infringed copyright is to plea that their work is an ‘independent creation’. More importantly, this is the only stage where the defendant’s artistic expression is considered and the only opportunity for the defendant to give—subjective—evidence as the provenance or derivation of this work. Should the defendant’s claim fail at this stage, the defendant is given no further opportunity to explain the origin of his work; his work is ignored at the ‘substantial part’ test stage of the proceedings, and his subjective reasons or purposes are discounted when considering whether and exceptions are applicable.

The purpose is making this observation is to highlight the need for clarity as to what legal test the defendant can rely upon at the stage of pleading ‘independent creation’. It is submitted that the proper test at this stage is the idea/expression dichotomy, since its function is to omit from copyright protection that which is not the proper subject matter for copyright. This argument will be made throughout the analysis of the Designers Guild case, together with a commentary on why the Lord’s separate reasonings appear, at first, to situate the idea/expression dichotomy elsewhere, namely during the ‘substantial part’ test.

Moreover, it will be argued that the ‘substantial part’ test operates an important and independent role within copyright infringement proceedings, namely a de minimis function whereby it is found that the defendant has copied the artistic expression of the claimant but not enough to warrant recrimination. As such, certain statements from the Lords as the necessity of the substantial part test are misguided.

The analysis will proceed as follows. In Part I, observations will be made of Lord Hoffman’s excellent analysis of the function of the idea/expression dichotomy in UK copyright. It will be noted, however, that Lord Hoffman’s breakdown as to the different types of “ideas” that exist is a little nascent and requires further fleshing out. As a consequence, certain interpretations are the concept of “idea” are irrelevant when the court has to consider the question of ‘independent creation’. Finally, it will be explained that although Lord Hoffman’s wording appears to suggest that the idea/expression dichotomy should be considered during the ‘substantial part’ test, it is clear that it has an important role during the independent creation stage.

Part II will concentrate on the observations of Lord Scott, who’s judgement draws a clear distinction between two types of copying, namely copying of a “discrete part” of the work and “altered copying”. As well as providing additional clarity as the when copyright infringement can be found, this distinction reinforces the importance of the idea/expression dichotomy as part of the independent creation stage of proceedings. Criticism is levelled at Lord Scott’s judgement, however, for failing to realise the importance of a de minimis test in cases of “altered copying”.

Part III discusses the brief observations of Lord Bingham and Hope, who, in the most part, agree with Lord Scott, but recognise that “in theory” the substantial part test still has a role to play in “altered copying” cases.

Finally, Part IV considers the judgement of Lord Millett. Unlike Lords Scott’s, Bingham’s and Hope’s rationale behind their reasons was that “a copier is not at liberty to appropriate the benefit of another’s skill and labour”,[3] Lord Millett’s highlighted the importance of copyright law as acting to preserve the provenance or derivation of artistic expression. It is submitted that this is the proper perspective from which to interpret the ‘independent creation’ defence and the only rationale which supports the proper positioning of the idea/expression dichotomy.

The analysis concludes with a summary of how the different judgements should be read together in order to ensure that the defence of ‘independent creation’ is not kerbed.

Part I – Lord Hoffman

Lord Hoffman began his excellent analysis of the function of the idea/expression dichotomy in UK copyright law with reference to the UK’s obligations under the TRIPS Agreement:

“Copyright protection shall extend to expressions and not to ideas, procedures, methods of operation or mathematical concepts as such”.[4]

The idea/expression dichotomy, as it appears in TRIPS,[5] functions as a limitation to the scope of protection afforded to the claimant in their protected work. Copyright cannot ‘protect’ a work before it is found that copyright subsists in the work —where the author can demonstrate sufficient originality to warrant protection. It follows that limiting the “extent” to which a copyright work is protected is thus a limitation of the scope of the exclusive rights of the author. In addition, the use of the word “shall” evidences the mandatory nature of the idea/expression dichotomy. In other works, no national judiciary can afford a claimant protection of their copyright work where the defendant has merely copied the “ideas, procedures, methods of operation or mathematical concepts” of the claimant’s work. The effect of this international obligation, however, as Lord Hailsham rightfully pointed in the case of L.B. (Plastics) v Swish Products: “all depends on what you mean by ‘ideas’”.[6]

On examination of UK case law, Lord Hoffman identified two interpretations of the word “ideas” in the context and functioning of the idea/expression dichotomy:

“The first is that a copyright work may express certain ideas which are not protected because they have no connection with the literary, dramatic, musical or artistic nature of the work. It is on this ground that, for example, a literary work which describes a system or invention does not entitle the author to claim protection for his system or invention as such. The same is true of an inventive concept expressed in an artistic work”.[7]

In this first interpretation, Lord Hoffman is highlighting that some ideas are not the appropriate subject matter for copyright protection. An example, given by Lord Hoffman, was the case of Kleeneze v DRG (UK).[8] This case concerned the alleged copying by the defendant of the claimant’s idea for a letterbox draught excluder and, as a consequence, the copyright in the claimant’s manufacturing drawings.[9] Ruling that any copyright infringement has taken place, Whitford J. held that the defendants:

“… did not copy the [copyright protected] work, that is Mr. Snow’s [manufacturing] drawing, though they undoubtedly copied Mr. Berry’s idea as communicated to Mr. Snow, the idea of a letterbox draught excluder made up of opposed brush strips held in a frame to be fixed over the letterbox… Once anyone has got the idea, the general shape and dimensions of the product were inevitably going to be dictated by functional considerations”.

The ‘idea’ that the defendants were found to have copied was that communicated—presumably verbally—to defendants. An “idea” in this context would never attract copyright protection in the UK on the grounds that it lacked the required originality[10] and fixation.[11] This example is thus irrelevant when discussing the idea/expression context on infringement. As for the argument that the defendants could have—given a slightly different fact pattern—infringed the artistic copyright in the claimant’s manufacturing drawings,[12] it must be borne in mind that section 51(1) of the Copyright, Designs and Patents Act 1988 prohibits a finding of copyright infringement:

“It is not an infringement of any copyright in a design document… for anything other than an artistic work… to make an article to the design or to copy an article made to the design”.

Conversely, the second interpretation of ‘idea’ that Lord Hoffman’s identified is relevant to the function of the idea/expression dichotomy as a limitation to the scope of protection:

“The [second] is that certain ideas expressed by a copyright work may not be protected because, although they are ideas of a literary, dramatic or artistic nature, they are not original, or so commonplace as not to form a substantial part of the work… At that level of abstraction, the idea, though expressed in the design, would not have represented sufficient of the author’s skill and labour [originality] as to attract copyright protection”.

This interpretation of “idea” can be further broken down into ‘non-original ideas expressed in a copyright work’ and ‘commonplace ideas’. The distinction between the two is somewhat harder to divine. The first can be expanded by the example offered by Lord Hoffman, the case of Kenrick & Co. v Lawrence & Co. [13] At the time of the hearing, 1890, illiteracy was high in the UK. In order to help the illiterate to understand how to complete a ballot paper whilst voting, the claimants designed a picture of a hand holding a pencil, completing an ‘X’ in a box. Such a drawing constitutes an artistic work and is therefore protected. The defendants produced their own version of a hand holding a pencil, completing an ‘X’ in a box and the claimants alleged copyright infringement. Wills J. held that despite the defendants copied the claimant’s idea of a hand holding a pencil, completing an ‘X’ in a box, there was no infringement. In this case, to finding infringement would be to permit the claimants a monopoly on:

“[P]ractically the only mode of instructing the illiterate voter how to record his vote… [A]ny other person who wishes to draw a hand pencilling a cross within a square cannot help producing something so like the [claimants’] design as to look very like a colourable imitation of it”.[14]

The claimants’ artistic work was little more than a ‘non-original idea expressed in a copyright work’. In other words, the non-original idea and the copyright express had merged so that one could not use the idea without using the same form of expression. Consequently, the defendants could copy the idea in an almost identical manner without infringing.

It is submitted that the ‘non-original idea expressed in a copyright work’, could not assist Lord Hoffman assessment because there is more than one way to express a combination of flowers and stripes. In obiter, Wills J. also remarked that it might be the case that an alleged artistic work is “the most commonplace” of ideas that only an exact reproduction of it would result in infringement.[15] Unlike the ‘non-original ideas expressed in a copyright work’, ‘commonplace ideas’ can be expressed in multiple ways. Similar to the US copyright concept of scènes à faire, ‘commonplace ideas’ are the building blocks of copyright expression, such as narrative or chord structure, genres, styles and techniques, which the author can use in order to construct his own artistic expression. And it was based on these ‘commonplace ideas’ and not ‘non-original idea expressed in a copyright work’ that Lord Hoffman made his judgement that:

“Generally speaking, in cases of artistic copyright, the more abstract and simple the copied idea, the less likely it is to constitute a substantial part. Originality, in the sense of the contribution of the author’s skill and labour, tends to lie in the detail with which the basic idea is presented. Copyright law protects foxes better than hedgehogs. In this case, however, the elements which the judge found to have been copied went well beyond the banal and I think that the judge was amply justified in deciding that they formed a substantial part of the originality of the work”.

Lord Hoffman’s analysis of the function of the idea/expression dichotomy in UK copyright law is certainly astute, if a little parsimonious. A close reading of his analysis, however, can highlight that two interpretations of “ideas “ are relevant on the questions of whether there has been an infringement of the claimant’s work, namely ‘non-original ideas expressed in a copyright work’ and ‘commonplace ideas’. As for ideas, such as the idea in Kleeneze, these are irrelevant on the question of whether a work has been infringed since copyright cannot subsist in an idea alone. Less welcomed, however, is that the phrasing of Lord Hoffman’s judgement appears to place the idea/expression test as a component of the court’s assessment of whether there has been a take of a substantial part as opposed to whether there is a causal connection between the two work:

“[E]very element in the expression of an artistic work (unless it got there by accident or compulsion) is the expression of an idea on the part of the author. It represents her choice to paint stripes rather than polka dots, flowers rather than tadpoles, use one colour and brush technique rather than another, and so on. The expression of these ideas is protected, both as a cumulative whole and also to the extent to which they form a “substantial part” of the work… The creation of artistic work involves having ideas and using technique to express them. But that cannot detract from the fact that the results of the use of the techniques were visual effects forming part of the artistic work. [The techniques] were what produced the distinctive impression of looseness and boldness… But once [an inference of copying has been established], the only question is whether the [techniques], together with all the other copied elements, added up to a substantial part of the [claimant]’s work”.

It is submitted, however, that together with the other Law Lords, Lord Hoffman meant for the idea/expression dichotomy to function as part of the assessment as to whether there is a causal connection:

“[T]here are numerous authorities which show that the “part” which is regarded as substantial canbe a feature or combination of features of the work, abstracted from it rather than forming a discrete part. That is what the judge found to have been copied in this case. That is what the judge found to have been copied in this case”.

Despite making reference to the ‘substantial part’ of the work, Lord Hoffman’s attention is directed at the question, ‘What has been copied?’, a question only relevant when assessing the casual connect between the two works. When read in conjunction with Lord Scott’s and Lord Millett’s judgement, the significance of asking ‘What has been copied?’ becomes apparent.

Part II – Lord Scott

Lord Scott identified that in UK copyright law there are two forms of copying, namely copying of a ‘discrete part’[16] of a work and ‘altered copying’.[17] The case in hand clearly involved altered copying, for the trial judge could not identify a single ‘part’ of the claimant’s design that the defendant copied. In absence of copying of a discrete part, however, Lord Scott was left to ask asking, “What was it that [the defendant has] copied?”:[18]

“It is not a breach of copyright to borrow an idea, whether of an artistic, literary or musical nature, and to translate that idea into a new work. In “altered copying” cases, the difficulty is the drawing of the line between what is a permissible borrowing of an idea and what is an impermissible piracy of the artistic, literary or musical creation of another. In drawing this line, the extent and nature of the similarities between the altered copy and the original work must, it seems to me, play a critical and often determinative role. In particular, this must be so where there is no direct evidence of copying and the finding of copying is dependant on the inferences to be drawn from the similarities”.

Lord Scott’s reasoning echoes that of Lord Hoffman in so far that he recognised that a defendant can rework the ideas in the claimant’s work. And, again like Lord Hoffman, Lord Scott fails to expressly position the idea/expression dichotomy within the question of whether there had been copying— although Lord Scott’s positioning is somewhat easier to identify than from Lord Hoffman’s judgement. This is because, unlike Lord Hoffman, Lord Scott’s reasoning lead him to a conclusion that, in “altered copying” cases, once copying can be inferred there is no need for the court to address the issue of whether a substantial part has been taken.

“If the similarities between [the works are] so extensive and of such a nature as to justify a finding that, in the absence of acceptable evidence of an independent provenance… it must, in my opinion, follow that the [defendant’s work] incorporated a substantial part of the [claimant’s work] … [The] finding of copying [makes] it, in my opinion, unnecessary … to go on to ask whether thecopying was of a substantial part”.

It therefore follows that, since Lord Scott found the substantial part unnecessary, any role that the idea/expression dichotomy might play must form part of the issue of copying. Yet, in finding the substantial part test unnecessary in “altered copying” cases, Lord Scott failed to recognise an additional important role that the test provides. For example, say that a court finds that the defendant has taken something more from a claimant’s work other than the ‘non-original ideas expressed in a copyright work’ and/or ‘commonplace ideas’. Should the test be active, the court would be required to assess quantitatively and qualitatively whether the artistic expression taken by the defendant formed a substantial part of the claimant’s work. In doing so, the court would be permitted—given the right fact pattern—to find that there was no infringement where the defendant only took a de minimis part of the claimant’s protected artistic expression. If the substantial part is unnecessary, the court has no option but to find that the defendant infringed copyright even where the defendant took only a minuscule of the claimant’s expression. Perhaps this hard-line approach in Lord Scott’s reasoning is an unintended result of his judgement being based “on an underlying principle of copyright law, namely, that a copier is not at liberty to appropriate the benefit of another’s skill and labour.”

Part III – Lord Bingham (with whom Lord Hope agreed)

For the most part, Lord Bingham and Lord Hope approved of Lord Scott’s judgement, except for one important difference. On the issue of the necessity of the substantial part test, Lord Bingham stated that:

“While the finding of copying did not in theory conclude the issue of substantiality, on the facts here it was almost bound to do so”.

“In theory” implies that, more often than not in practice, the substantial part test will be unnecessary—especially where the facts are similar to those of the case in hand. Yet, Lord Bingham’s reasoning allows for occasion whereby the test may serve a purpose, such as a defendant’s plea that only a de minimis part of the claimant’s protected artistic expression was copied.

Part IV – Lord Millett

Lord Millett confined his reasoning to artistic works alone, presumably as a consequence of noting Lord Scott’s distinction between copying of a ‘discrete part’ of work and ‘altered copying’;[19] the latter being the more likely form of copying in artistic works. For Lord Millett, the normative purpose of copyright in relation to artistic works is to protect the “derivation” of artistic expression. It is therefore irrelevant to what extent the two works resemble each other:

“[T]he overall appearance of the defendant’s work may be very different from the copyright work. But it does not follow that the defendant’s work does not infringe the [claimant]’s copyright”.[20]

It is submitted that providing “derivation” of artistic expression as the rationale behind the question of whether the defendant copied the claimant is preferable to Lords Scott, Bingham and Hope’s rationale that “a copier is not at liberty to appropriate the benefit of another’s skill and labour”.[21] The “appropriation” theory implies an intent to gain an unjust enrichment, whereas the “derivation” theory recognises that all artistic expression is inspired by the world around the artist and are free to use ideas in other’s works, but that there is social utility in ensuring that artistic expression is properly attributed to the true author. This focus of derivation of artistic expression lead Lord Millett to conclude that, in absence of an omission of copying from the defendant, an inference of copying can only be found where evidence supports a finding that the similarities between the two works is a result of the defendant deriving his artistic expression from the defendant. The corollary is that at the stage of establishing a causal connection “commonplace, unoriginal, or … general ideas” may be disregarded.[22] In other words, if the defendant derived their artistic expression from the same unprotected ideas under the idea/expression dichotomy as the claimant, no inference of copying should be found. Importantly, dealing with the idea/expression dichotomy during the casual connection stage of assessing infringement provides a defendant opportunity to make out a defence as to the provenance of their expression:

“If the [claimant] demonstrates sufficient similarity … and establishes that the defendant had prior access to the copyright work, the burden passes to the defendant to satisfy the judge that, despite the similarities, they did not result from copying”.

Lord Millett’s construction thus allows for the idea/expression dichotomy to provide a defence to infringement whereby the defendant’s creative process becomes relevant. Taking Lord Millett’s reasoning one step further, even if the claimant’s work is at the elbow of the defendant throughout the creative process, no inference can be drawn from the reutilisation of commonplace artistic expression. As such, the defendant can admit not only to have access to the claimant’s work but also—potentially—using it as a source of inspiration to the extent that he wanted to study commonplace elements.

The importance of where Lord Millett situates the idea/expression dichotomy is further confirmed by how he addresses the question of substantial part. Once an inference of copying has been established, there is “no need to look at the infringing work” when assessing whether a substantial part of the claimant’s work has been taken. If Lord Millett instead placed the idea/expression dichotomy at this stage of assessing infringement, the provenance of the defendant’s artistic expression would become irrelevant. At best, the defendant could give evidence to the commonplace of elements of the claimant’s artistic work, but it would not afford the opportunity for the defendant to make a representation regarding how these commonplace elements influenced his own artistic creation. Moreover, according to Lord Millett:

“the answer to the [casual connection] question will almost inevitably answer [substantial part question too], for if the similarities are sufficiently numerous or extensive to justify an inference of copying they are likely to be sufficiently substantial to satisfy this requirement also”. [23]

In light of this, using the idea/expression dichotomy at this stage of the defence would become almost irrelevant as the court will have already made its finding of fact as to copying, a finding that the defendant would have to overcome in affording new evidence.

There is, however, a conceptual problem with Lord Millett’s construction. How can it be that the overall appearance of two works “be very different” but an inference of copying be established? It is submitted that if two works were very different, it would be highly unlikely that copying proceedings would be filed in the first place, let alone requiring the court to undertake a detailed idea/expression dichotomy analysis. Despite this conceptual problem, Lord Millett’s construction must be praised for its proper situation of the idea/expression dichotomy in establishing infringement.

Conclusion

Overall, the Designer Guild judgement has some very promising elements to it when considering how to rationalise the defence of ‘independent creation’ in the UK. On close reading, it would appear that all the Law Lords agree that the idea/expression dichotomy is the correct test to apply when assessing whether the similarities in the defendant’s work are as a result of copying or independent creation. Lord Millett even goes so far as to justify the inclusion of the idea/expression dichotomy as to preserve the provenance or derivation of artistic creation; be it the claimant or the defendants. This, it was argued, was variable to the traditional author/natural rights arguments, because it accommodates the idea/expression dichotomy whilst highlight the public utility in artistic expression being properly attributed.

As for the proper function of the substantial part test following a finding of copying in “altered copying” cases, it is regrettable that several of the Law Lords missed an opportunity to express the importance of the de minimis principle. On a strict reading of the judgment, it could be argued that no de minimis principle exists at all in cases of altered copying so that where any of the claimant’s artistic expression is found in the defendant’s work, no matter how small, the defendant must be found to have infringed copyright. There is, however, good reason to follow the judgements of Lord Bingham, Hope and Millett so that the de minimis principle can continue to operate.

[2] Copyright, Designs and Patents Act 1988 (as amended by Enterprise and Regulatory Reform Act 2013 (Commencement No 10 and Saving Provisions) Order 2016), section 16(3) “References in this Part to the doing of an act restricted by the copyright in a work are to the doing of it— (a) in relation to the work as a whole or any substantial part of it, and (b) either directly or indirectly”.

[3] Lord Scott @2431, also See Lord Bingham, “No one else may for a season reap what the copyright owner has sown” @2418

[9] Copyright Act 1956 (4 & 5 Eliz. 2 Ch.74), s.48: “”reproduction”… in the case of an artistic work, includes a version produced by con- verting the work into a three-dimensional form, or, if it is in three dimensions, by converting it into a two-dimensional form”.

[16] Although Lord Scott does don’t use the term ‘discrete part’; this term is borrowed from Lord Hoffman’s judgement.

[17] Lord Hoffman makes the same observation: “[T]here are numerous authorities which show that the “part” which is regarded as substantial can be a feature or combination of features of the work, abstracted from it rather than forming a discrete part”

[19] @2426 “My noble and learned friend, Lord Scott of Foscote, has drawn attention to the differences between the copying of a discrete part of the copyright work and the altered copying of the whole, or the copying with or without modifications of some but not all the features of the copyright work. The distinction is not material in the present case.”